Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 29 April 2005

Managing Information reports that the WIPO Industrial Designs and Geographical Indications (SCT) has agreed on a text which will form the basic proposal for negotiations relating to the revision of the Trademark Law Treaty. The draft will be discussed at the Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty to be held in March 1996. In particular, the revisions aim to take into account technological developments which are relevant to trade mark registration. These include provisions on electronic filing of trademark applications and associated communications, the formalities concerning the representation of all types of marks, including visible signs (and certain forms of visible signs, such as hologram marks, colour marks, position marks or motion marks) as well as non-visible signs. Also included are provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties. Additionally, a preparatory meeting for the diplomatic conference has agreed that concerned regional such as OHIM and ARIPO will be entitled to attend the March 2006 diplomatic conference.

All the colours of the rainbow may be graphically representable – but is the future brite for their distinctiveness?

The IPKat says that it’s all very well to agree on how these “non-traditional” types of trade marks can be recorded, but he has doubts over whether many of them are actually capable of distinguishing the goods of an undertaking from those of other undertakings (and hence acting as a trade mark).

Joint IPKat master Jeremy is making some notes for a paper he hopes to deliver around the end of the year on the relevance of game theory in intellectual property law. He is working on the theory that, if IP registration, licensing and infringement were subjected to game theory, we'd all get a much better idea how the system worked and why it's sometimes more worthwhile being an owner, sometimes an infringer. If anyone has any bright ideas or can recommend any prior art on this subject, he will be thrilled to hear from them. Just write to Jeremy here.

Game theory: why there are always winners and losers, whatever the state of IP law

PS Jeremy would like to thank those of you who wrote in with thoughts on summary judgment in IP litigation. His article is now about 3,000 words long and growing. When it's ready, it'll be available for preview, as usual.

The series of talks and seminars hosted by the Queen Mary Intellectual Property Research Institute continues unabated. The next event is this coming Thursday, General Election day in the United Kingdom, when the QMIPRI welcomes Christopher Stothers (Milbank Tweed). Christopher will be speaking on "Parallel Trade, Competition Law & Intellectual Property". The venue is the lovely Dean Rees House, Charterhouse Square. The event runs from 5.30-7.00pm with lots of time for questions and wine ... If you're interested in attending, click here to let the Institute know.

IP imposes bars on parallel trade -- but mental gymnastics by lawyers can overcome most problems

The paper version of the April 2005 issue of Butterworths' Intellectual Property and Technology Cases has now been published (the cases in this issue have long been published online as part of the LexisNexis IP&T package). Cases featured in this issue are

* Kirin-Amgen v Transkaryotic Therapies: the House of Lords case on non-exact patent infringement in which Lord Hoffmann more or less says that the old Improver test of infringement is right except when he says it isn't;

* Kaul GmbH v OHIM, a Court of First Instance decision on Community trade mark law that seeks to force the Boards of Appeals' hand in having to consider evidence that was not placed before the examiner in the first place;

The EU's Official Journal reports that there has been a request for an Advisory Opinion from the EFTA Court by the Norwegian Markedsrådet (Market Council) in the case of Pedicel AS v Sosial- og helsedirektoratet (Case E-4/04). The questions asked of the EFTA Court are as follows:

1. Since wine is not included in the product coverage of Article 8(3) of the EEA Agreement:should the Agreement — including Article 18 and Article 23 cf. Protocol 47 — be so understood that Article 11 and/or Article 36 are applicable to wine?2. Should Article 11 and/or Article 36 of the EEA Agreement be so understood that they are applicable to national legislation that contains a general prohibition against the advertising of alcoholic beverages, such as in the Act on the sale of alcoholic beverages, section 9-2 et al.?3. If question 2 is answered in the affirmative: Can such a prohibition nevertheless be maintained out of concerns for public health, and if so, is it in conformity with the proportionality principle of EEA law?When answering this question, it should be indicated to what extent the application of a general precautionary principle in this field would be in conformity with the case law of the EFTA Court/Court of Justice of the European Communities.

The IPKat always gets excited when questions are referred to the EFTA Court, since it's one of Europe's forgotten courts. Advertising bans are bad for consumers, at least to the extent that they deprive them of information they need when making their purchase decisions. They're also bad for brand owners, whose valuable assets cannot be promoted profitably within the most natural medium for them. Merpel says, "advertising bans are all a bit irrelevant these days, aren't they, since whatever is banned in the mass media is generally available over the internet anyway".

Merck held marketing authorisations for three medicinal products used to treat osteoporosis. The first of those products ("A") was authorised by the European Community in 1993, while the third ("B") was authorised in 2000. Three generics companies sought marketing authorisation for a generic product ("C") which was a copy of B. Under Directive 2001/83 an applicant for marketing authority has to supply a full set of data in order to show the safety and efficacy of the product, but not in certain circumstances in which it could refer to data submitted in respect of a previously authorised product. Where authorisation was sought for a product ‘essentially similar’ to another product authorised for (in the UK) ten years, under Art.10(i)(a)(iii) of the directive, an applicant could refer to data already submitted in respect of the other authorised product.

The generics companies relied on the data submitted on A and B in seeking marketing authorisation for C. Although A and B contained the same active ingredient, they were not essentially similar within the meaning of the directive, since their schedule of dosage differed. The Licensing Authority accepted that the generics companies were not required to submit any further data, but Merck argued that such an approach was unlawful and sought a reference to the European Court of Justice (ECJ). In Merck's opinion this issue was as yet unresolved, particularly with regard to differences in dosage.

Moses J dismissed Merck's application, holding that the principles enunciated by the ECJ in the earlier decisions (Case C-368/96R v The Licensing Authority ex parte Generics, 3 December 1998, Case C-106/01 R (on the application of Novartis Pharmaceuticals UK Ltd) v The Licensing Authority, 29 April 2004 and Case C-36/03Approved Prescription Services Ltd v The Licensing Authority, 9 December 2004) were clearly applicable in this case. Although it was true that a change in dosage had not been considered before, it was for the court of justice to interpret the EC Treaty and the relevant principles by which it was to be interpreted, and for the domestic court to apply those principles to the particular case. No new issue of principle arose in this case.

The IPKat knows how much money is at stake when a proprietary pharma product is handed to the manufacturers of generic products. That's why companies like Merck find it so efficacious to buy time by pressing even fairly weak arguments as far as they can go. Merpel says, but doesn't Merck make generic products too?

Reuters reports that the European Commission Competition Director General Philip Lowe has said that Microsoft will have to disclose details of its patents in order for the Commission to impose antitrust sanctions against it. Microsoft must license interoperability information to competitors. The Commission found that Microsoft was failing to do this. In order to establish acceptable licence terms, Lowe has said that the Commission needs to know what of the information needed for interoperability is protected by patent and therefore deserving of remuneration and what of the information is in the public domain and therefore should be available gratuitously.

The IPKat wonders if this highlights a problem with the way in which information abut patents is made available by patent offices. After all, the whole point of patenting is to make the information contained in the specification available to the public.

This came today from LexisNexis' Butterworths All England Direct subscription-only service: European Healthcare (East) Ltd v Gosai and another, a Chancery Division decision of Judge Rich QC, sitting as a deputy judge. It hasn't yet reached BAILII, which is the fate of most small-time cases that have an interim flavour to them.

Gosai worked for a company (the second defendant company), also providing certain facilities for it. That company's owner later sold the sole share in it to European Healthcare, which changed the comnpany's name to its own. Gosai alleged that, before the transfer, he made an arrangement with the owner of the second defendant, by which the sole share and 20% of that company's profits would be transferred to him in return for the work he had done for the company. Gosai later claimed he had a claim against the company.

European Healthcare sued Gosai and the company, seeking an interim injunction to stop them from trading in the name of the second defendant and to order each of them to change that company's name. European Healthcare also sought delivery up of certain documents which, it said, belonged to the second defendant and had been in Gosai's possession while he was working for that company. Gosai said he had a lien over the requested documents under to his arrangement with the company's former owner.

Judge Rich QC ordered delivery up.

* Gosai said he did not object to the making of such an interim injunction against him pending trial. Accordingly, the court would grant the injunction, with liberty to Gosai to apply to vary or discharge the order.

* Under the circumstances, it was unnecessary to require Gosai's former company to change its name. It was self-evident that the documents requested by European Healthcare belonged to it and were reasonably necessary for the efficacious carrying on of its business. Even if Gosai had a quantifiable claim against the company's previous owner, such a claim only gave him a right against that person but did not extend to a right against European Healthcare. In any event, since under the alleged agreement Gosai's rights did not arise until after May 2005, there was no present claim against which such a lien could exist.

* Delivery up would be ordered within 14 days with liberty to the defendants to apply to vary or discharge the order.

The IPKat loves these little intrigues, but wonders what the name of the mysterious company is and what it would have to be changed to. It's just so stuffy when law reporting convention demands the use of boring descriptors like "claimant" and "defendant", when the parties' names are usually easier to remember.

Here's another case that turns on the availability of summary judgment: General Alarms Ltd v Time Rapid Prototyping Solution Ltd, decided yesterday in the Chancery Division by Mr Justice Etherton (not yet available on BAILII but once again scooped by Lawtel).

General Alarms, a business that designed and supplied military equipment, tendered for the supply of an optical sight to a Swedish company and contracted with Time to produce certain drawings and models for them. After Time delivered the drawings and models, a dispute arose over payment. Time argued that the contract incorporated its standard conditions of sale, which provided that as a result of General Alarms' failure to pay the sums due, Time retained title of the goods supplied. Accordingly, Time argued, General Alarms were not entitled to the copyright or design right in the design, drawings or models. General Alarms sued for a declaration that they owned the IP rights under the Copyright, Designs and Patents Act 1988 s.215(2), or that there was an implied term that Time would assign to them any copyright and design right they might have.

Time to haggle over contract terms should be when they're negotiated, not when they're being litigated

Etherton J refused General Alarms' application, holding that it was impossible, on an application for summary judgment, to dismiss Time's argument that its standard terms and conditions governed the facts and to say that this defence had no prospect of success.

The IPKat observes that not all judges take the same view of contract-based defences where summary judgment is sought. A case to contrast with this one is Experience Hendrix v Purple Haze (Chancery Division, 24 February 2005), where Mr Justice Hart gave summary judgment in the face of the defendant's admittedly obscure (but arguably arguable) contract-based submissions. Merpel wonders, without having seen the contract first hand, how a retention of title clause could in principle extend to intellectual property.

The IPKat has come across a novel way of promoting IP in the Shanghai Star. As part of national celebration of World Intellectual Property Day (the IPKat certainly indulged in jelly and balloons on 26 April – didn’t you?), Shangai is promotioning IP rights all this week. A key feature of the campaign is the establishment of a patent exchange centre which will be set up at the Shanghai Intellectual Property Park. The park was opened as part of last year’s marking of World IP Day and provides services such as innovation, transformation, intellectual property rights application and safeguarding and education of IP rights.

A place for IP lawyers to roam free…

The IPKat thinks that this is a good and informative way of making IP accessible to the people though he thinks that a public green-space devoted to an IP theme where overworked IP lawyers could go to frolic would be far more fun. Merpel wants to know, do visitors to the park get to walk among patented petunias, copyrighted camellias and trade marked tulips?

Wednesday, 27 April 2005

It's not yet available on BAILII, but the Court of Appeal's decision in Nokia Corporation v Interdigital Technology Corporation yesterday has already been snapped up by the Thomson-owned Lawtel subscription-only service.

This was an appeal by Interdigital against Mr Justice Pumfrey's refusal to order (i) Nokia not to pursue certain applications in the US courts, (ii) a declaration that discovery sought in the US applications was irrelevant to any issue in UK patent proceedings or (iii) a stay of the UK proceedings pending the outcome of an arbitration between the parties. In the application before him Pumfrey J concluded that a decision as to whether to restrain the US applications was not a mere case management decision. For the court to interfere, Interdigital needed to show there had been abusive behaviour on Nokia's part that had prejudiced it. On the facts before it, there was no evidence of an abuse of process. FurtheHe also held that, while it was unlikely that the material requested in the US applications would be of relevance to the UK proceedings, that possibility could not be excluded. Nor, in his opition, was there any basis for a stay of the proceedings.

Interdigital: may be appealing to their customers but not to the Court of Appeal

The Court of Appeal dismissed Interdigital's appeal. The only reason Interdigital applied for a stay was to influence the arbitration proceedings, which was not a good enough reason. Interdigital had to show a good reason for the stay and the judge was correct in finding that it had not done so. Further matters that the judge had dealt with had become irrelevant since the judge's order because the arbitration had been concluded, but Interdigital had failed to show that the judge had erred in any way.

The IPKat always glazes over a little when cases of this sort come up, particularly when they are so heavily dependent on facts which (for the sake of convenience and speed) are generally omitted from newsy summaries. Still, it's worth remembering that applications for stays and suchlike have a strong equitable basis to them: the courts will consider what is fair and right on the facts, rather than read the answer from the text of a lawbook.

On Sunday, the Sunday Business Post reported that the Irish company Sonarstate is contemplating suing Heineken and its advertising agency, McCann Erickson, for copyright infringement. Sonarstate claims that the Speakerhead character used in Heineken’s “Where’s your head at?” campaign infringed its copyright in the Speakerboy character that Sonarstate used in its marketing campaign which involved Eircell and Sony Music. It is thought that Sonarstate was planning to use the Speakerboy character in its next round of advertising.

The IPKat is interested to see how this one goes. In particular, he will be interested to know whether there will be any discussion of whether fictional characters can be protected by copyright – always a controversial issue.

Tuesday, 26 April 2005

The IPKat has just received from his old and distinguished friend István Gödölle a copy of the 31st issue of the Proceedings of the Hungarian Group of AIPPI. The Hungarian group has a record of long and enthusiastic commitment to the analysis of live issues in intellectual property, even during the dark days of the Iron Curtain. It is therefore with pleasure that the IPKat reviews this latest offering. Recommended features include

* "Changes in the Trademark, Design and Patent System after the EU Accession" (reprinted from Danubia's Spring 2004 IP Newsletter);

The English text has been revised by Timothy R. Holbrook (Chicago-Kent College of Law), who has managed to ensure that the translations are intelligible without ever losing their Hungarian flavour.

The Hungarian AIPPI doesn't seem to have a website, though it does have a telex (has any reader of this blog ever used a telex?). Probably the best way to contact the group is by phoning +36 1 353 1661 or by faxing +36 1 353 1780.

The IPKat received today an unsolicited email which carried the following text:

Get the Finest Rolex Watch Replica !

We only sell premium watches. There's no battery in these replicas just like the real ones since they charge themselves as you move. The second hand moves JUST like the real ones, too. These original watches sell in stores for thousands of dollars. We sell them for much less.

Under the Frequently Asked Questions the site offered the following nuggets of wisdom:

1. Why would I want to purchase a replica watch?For most people, it is because they want to look good, but are unwilling to pay very high prices. For other people, it is because they have an authentic watch, but want to purchase something identical for insurance and personal security. And for other people, it is because they are collectors who want to have a wide variety of watches on display.…9. Where can I go if I want to purchase a real watch?If you want to purchase a authentic watch and not a replica, please locate only an authorized dealer.

The May 2005 issue of the European Intellectual Property Review has now emerged, a little early. It special focus is on the registrability of so-called “non-traditional” trade marks, with cases from the European Court of Justice, the Court of First Instance, OHIM, England and France. Of particular interest are the following decisions:

A Honda masquerading as a Lambo: this is why CTMregistration was sought

* Lamborghini’s application to register as a Community trade mark a “movement mark” consisting of the way its car doors opened;

* Bongrain’s attempt to colonise the shape of one of its cheeses in the UK;

* The final round of Mag’s battle to register its torch shapes as Community trade marks on the basis of inherent, rather than acquired, distinctiveness;

* The fate of the distinctive-because-ultralong word mark UNIVERSALKOMMUNIKATIONSVERZEICHNIS …

The European Intellectual Property Review is published monthly by Sweet & Maxwell.

CNet reports that a formidable coalition, including Microsoft and Oracle are calling for patent reform. At last weekend’s Association for Competitive Technology Conference, Brad Smith, Microsoft’s general counsel called for it to be made easier to challenge patents once they’ve been granted. His call, which was heard by a large number of Congressional staffers in the audience, was motivated by the fact that Microsoft finds itself defending itself against 35 to 40 infringement suits at any one time. Oracle’s chief patent counsel pointed to the fact that patent infringement damages far exceed what companies would pay to licence the technology question. The call is being backed by the US Chamber of Commerce and the Senate Judicial Committee met yesterday (Monday) to consider patent reform legislation.

Patents – constantly vilified

The IPKat can’t help but think that it would be more sensible to grant solid patents in the first place, rather than focusing on challenging them after they’ve been granted.

Monday, 25 April 2005

Here's a nice one from the naming and branding blog Snark Hunting: Gap's new stores for ladies in the 35+ age group is to be called Forth & Towne. If you write out the name in full, instead of with an ampersand, that's "FAT". The IPKat says, "brand name creators should really be more careful".

Friday, 22 April 2005

The Passover is fast approaching and the IPKat is taking a few days' much-needed break. He hopes to back on the blog late Monday night or some time on Tuesday. In the meantime, this is a chance for you to

(i) catch up on those blogs you meant to read but never had time to;

Why is this cat different from all other cats ...?

(ii) read over some of those blogs that annoyed or interested you, to see if anyone has posted any comments on them;

(iii) read cases and legal developments for yourself, without having some damn cat telling you what he thinks or, worse, telling you what you ought to think.

A couple of weeks after attending a session at the Fordham IP conference that addressed IP securitisation in the Asia Pacific region, the IPKat found himself contemplating a copy of Exploiting Patent Rights & a New Climate for Innovation in Japan, edited by Dr Ruth Taplin and on sale from the Intellectual Property Institute, London at £35.00 or US$50.00. Published in 2003, this slim volume didn't attract very much attention in wider IP circles. But, as its web-blurb says,

"it provides up-to-date information on current IP practices as well as cultural and infrastructural changes that should interest anyone in high technology business operating or looking to operate in the region. Specialists in the field, lawyers, management consultants and anyone that plans to do business in Japan and wishes to understand the nature of changing risk factors will find this book invaluable".

Though the editor is an academic, the text is fact- and reality-driven, which is what makes it so appealing to people who, while ever willing to generate their own theory, need data and an amenable framework in which to understand it.

Exploiting a new climate for innovation...

The IPKat's glad he's got a copy. Merpel however raises a bewhiskered eyebrow and asks, "if this book is published by the Intellectual Property Institute, why doesn't it have a proper copyright notice in terms of Article III.1 of the Universal Copyright Convention -- or does no-one care any more?"

IPKat co-proprietor Jeremy is currently writing an article on summary judgment and striking out in intellectual property proceedings. For those readers who are not familiar with the terms, "summary judgment" is where the judge issues an order in favour of one or other party without letting the matter under dispute go to a full argument before the court, on the basis that the successful party's case on the disputed point is so strong that his adversary has no chance of succeeding against it. "Striking out" is where the court orders all or part of a claim or a defence to be removed from the dispute on the ground that it is so weak or unjustifiable that there is no justification in leaving it to be resolved at trial.

If any reader of the IPKat weblog has any interesting thoughts, strong opinions or valuable experiences of summary judgment and striking out, Jeremy would be most excited to hear about them. Please email him here and tell him. When the draft article is finished (realistically, some time in June), he will make it available on the blog for anyone who wants to read it. The article will focus mainly on UK law but, if there are any lessons out there which lawyers in other jurisdictions can teach us, those lessons will be highly welcome.

More summary judgment in Alice in Wonderland (click here and scroll down to the mouse's tale).

SPS owned a patent for apparatus for catching debris in a well bore designed for use in the oil and gas drilling industry. The apparatus incorporated a filter through which the well fluid was circulated, to remove debris. Smith applied to revoke the patent on the ground that the invention claimed was not novel and/or did not involve an inventive step. Even after SPS amended its claims, the Patent Office concluded that claim 1 of the patent had been anticipated by prior art but that most of the rest of the patent was fine. SPS appealed against the ruling on claim 1; Smith cross-appealed against the other rulings.

Lewison J allowed SPS' appeal but dismissed Smith's cross-appeals, holding that the hearing officer had erred in concluding that claim 1 was anticipated by prior art. He had concluded that the prior art include a filter and that the invention set out in claim 1 of the patent had therefore been anticipated. This was not however the case.

The IPKat says: "this is one of those cases that seems to turn pretty well entirely on the facts, with no real law in it". Merpel adds, "at least we know that Lewison J is still doing patent cases. He doesn't seem to have had one for ages".

Thursday, 21 April 2005

Professor Ruth Soetendorp of the University of Bournemouth’s CIPPM has informed the IPKat of a forthcoming event. The WSEAS International Conference on Engineering Education will be taking place in Greece on 8 to 10 July. Amongst the sessions on offer are one led Professor Soetendorp on “Intellectual property education for entrepreneurial engineers – developing pedagogic strategies for including KEY but not CORE elements in the engineering syllabus”.

Vouliagmeni – location of the WSEAS Conference

The session is on how to get universities to open up the engineering syllabus to intellectual property and other non-core topics. It is part of the work being undertaken by a small interdisciplinary research project group consisting of Professor Soetendorp and Bill Childs (an IP lawyer from University of Technology Sydney) with Prof Jim Roach and Dr Rob McLaughlan (of the School of Design Engineering & Computing, Bournemouth and the Faculty of Engineering, University of Technology Sydney).

You wrote [on Tuesday, 19 April] that the Pan Case was boring. However, this is not the case. It is of utmost importance for users of the CTM system. The TPI for the first time had accepted the interpretation of the OHIM that it can send out any decision by fax (despite unclear wording of Rule 62(1) of the Implementing Regulation). Moreover, it accepted OHIM's evidence of computer fax reports without any further technical expertise if OHIM's automated fax sending system is really reliable. Important part of CFI's reasoning was that the lawyer was not able to provide a list of incoming faxes of that day. As a consequence, representatives should be extremely careful to keep the lists of incoming faxes of the fax machine which was indicated to OHIM, in order to prove that no fax had been received at a certain moment.

The IPKat thought you might be interested to know that last week he received 2,473 visits -- a new weekly record. 546 of those visitors read the blog last Thursday, the largest number recorded for a single day (that's one visit every 2.64 minutes). Many thanks for supporting this blog and for making it so worthwhile.

The ECJ has issued its ruling today in Joined Cases C-207/03 and C-252/03Novartis AG, UCL and the Institute of Microbiology and Epidemiology v Comptroller-General of Patents, Designs and Trade Marks for the United Kingdom and Ministre de l’Économie v Millennium Pharmaceuticals Inc., formerly Cor Therapeutics Inc, two cases on supplementary protection certificates (SPCs) for pharmaceutical products for which patent protection is expiring.

In Case C-273/03 Novartis, UCL and the Institute of Microbiology and Epidemiology applied for two SPCs, one for Basiliximab, an immunosuppressant, and the other for an antimalarial combination of Artemether and Lumefantrin. On 7 April 1998 and 22 January 1999 the Swiss granted marketing authorisations for Basiliximab and for the combination of Artemether and Lumefantrin. Those authorisations were automatically recognised in Liechtenstein, by operation of Liechtenstein law. Basiliximab and the combination of Artemether and Lumefantrin were granted marketing authorisations within the EU on 9 October 1998 and 30 November 1999. The UK Patent Office, considering that the duration of the SPCs should be calculated by taking into account the dates when the Swiss marketing authorisations were issued, granted SPCs for durations determined by reference to those dates. Novartis etc took the view that the duration of the SPCs should have been calculated by reference to the first marketing authorisations granted within the EEA, not Switzerland, and appealed to Patents Court which referred the matter to the Court for a preliminary ruling.

Liechstenstein: extends Swiss influence into the EEA

In Case C-252/03 Millennium's predecessor applied to the Luxembourg Minister for the Economy for an SPC under for Eptifibatide, for which the date of the first marketing authorisation in the EU was 1 July 1999. Millennium said in its application that a marketing authorisation had been issued for that medicinal product by the Swiss authorities on 27 February 1997. On the ground that Swiss marketing authorisations are automatically recognised under Liechtenstein law (Liechtenstein being an EEA state), the Minister issued an SPC and fixed its date of commencement as the date of the Swiss marketing authorisation. Millennium sued, claiming that that date should be replaced by 1 July 1999. Again, the matter was referred to the ECJ. After due deliberation that court ruled:

"In so far as an authorisation to place a medicinal product on the market issued by the Swiss authorities and automatically recognised by the Principality of Liechtenstein under that State’s legislation is the first authorisation to place that product on the market in one of the States of the EEA, it constitutes the first authorisation to place the product on the market within the meaning of Article 13 of Regulation 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products, as it is to be read for the purposes of the application of the Agreement on the EEA".

The IPKat always wondered what use Liechstenstein was to the IP community. Now he knows.

The Opinion is so far available only in Italian, Lithuanian, Swedish, Spanish, Finnish, German and Portuguese. If it comes up in English or any of our readers can help, we'll be able to tell you what this case is all about.

Clue: it looks like something to do with copyright, Directive 92/100 and "emissioni radiofoniche in più Stati membri".

STOP PRESS: Wednesday afternoon, 1528pm: the French translation has now been posted on the ECJ website.

Wednesday, 20 April 2005

Yesterday the US House of Representatives passed a bill that will become known as the Trademark Dilution Revision Act of 2005. The bill seeks to undo the “damage” done by the Supreme Court in the Victoria’s Secret case and to iron out a few dilution wrinkles that have come to light since the original Federal Trademark Dilution Act was passed in 1995. Major changes to dilution law are:

*It is made clear that likely, rather than actual, dilution is required for a successful claim.*There is no need to show that the claimant has suffered economic injury.*It is made clear that the senior mark must be famous among the general US consuming public. This means that fame in a niche product or geographical market will be insufficient.*It is made clear that the Act outlaws both blurring and tarnishment.*A non-exhaustive multifactor test for blurring.*A definition of tarnishment.

The bill now goes to the Senate.

Dilution – the pun is inevitable

The IPKat notes that the amendment provides stronger protection, but to a narrower range of marks. He’s pretty puzzled though – one of the factors in the multifactor test for blurring is “Any actual association between the mark or trade name and the famous mark”. The factors in the test are not prerequisites for a successful blurring claim, though if they are present they will help to show that blurring has occurred. How can a junior mark damage an earlier mark if consumers do not associate the later mark with the earlier mark? This is something that has been realised in the EU, where the ECJ in Adidas v Fitnessworld has said that there must be a “link” or “association” between the two marks for there to be detriment or unfair advantage.

The bill is available here – it is HR 683.Perfect dilution here and here

The IPKat has found three fresh Community trade mark cases awaiting him today on the Curia website. They are

* Case T-211/03, Faber Chimica v OHIM, Industrias Quimicas Naber, SA Nabersa. Faber applied to register as a CTM for chemicals, bleaches, paints etc in Classes 1 to 3. Naber opposed, citing its earlier Spanish registration of for goods in the same classes. The Opposition Division held there was no similarity of any kind between the two marks but surprisingly the OHIM Fourth Board of Appeal considered that there was both visual and aural similarity and that the relevant Spanish consumers would be likely to be confused. The CFI annulled the Board's decision. The marks were not similar and, even if they were, the relevant consumers were sufficiently specialist to be able to tell them apart.

* Case T-273/02, Krüger GmbH & Co. KG v OHIM, Calpis Co. Calpis sought to register CALPICO as a Community trade mark for soft drinks; Krüger opposed, citing its earlier German registrations of CALYPSO for fruit powders and non-alcoholic preparations for making fruit drinks. The Opposition Division thought the marks too different for there to be any likelihood of confusion. The First Board of Appeal agreed. So too did the CFI, which said:

"51 ... in its decision dismissing the opposition on the ground that there was no likelihood of confusion, the Opposition Division stated:

‘Although identical goods are at issue in this case, the differences between the signs which are compared suffice to distinguish [the marks] with enough certainty. Admittedly, strict criteria should be applied in this case as regards the difference which must exist between the marks, in particular because the goods compared are staple goods which, as experience shows, are bought fairly carelessly and without particular attention being paid to the names of the goods.’

52 [T]he Board of Appeal ... stated:

‘23 The goods covered by each of the marks are everyday goods that consumers generally buy as they go past in supermarkets and shops selling beverages. The price of those articles is such that they may be described as low-cost articles. However, given the extensive choice in the fruit juices and beverages sector, the average customer’s attention should not be regarded as insignificant. Accustomed to an extensive choice of fruit juices and goods of that kind, such as powders presented in similar packaging, consumers will pay attention to the packaging of each or will examine the marks more closely before making a purchase.’

53 Given that the goods designated by the conflicting marks are staple goods, both the Opposition Division and the Board of Appeal considered that the level of attention of the relevant public was not high. It is true that paragraph 23 of the [Board's] decision differs from the Opposition Division’s decision as regards assessment of the exact degree of attention which the relevant public may pay to the conflicting marks, on account of the effect of extensive choice on attention in the fruit juices and beverages sector. However, while the Board of Appeal took the view that extensive choice in the fruit juices and beverages sector may lead the relevant public to pay particular attention to the conflicting marks, it none the less did not consider that that attention was high.

54 In any event, the difference in the assessments in the decisions of the two bodies of OHIM does not imply any consequence as regards the absence of similarity between the conflicting signs and the absence of likelihood of confusion between the marks which were found by those bodies. Having regard to the visual, aural and conceptual differences between the conflicting signs noted in paragraphs 38 to 43 above, the average German consumer will not attribute the same commercial origin to the goods designated by the conflicting marks even if he pays no particular attention to those marks".

* Case T-318/03, Atomic Austria GmbH v OHIM, Fabricas Agrupadas de Munecase de Onil, SA. FAMO applied to register the words ATOMIC BLITZ as a Community trade mark for games, playthings and sporting articles in Class 28. Atomic Austria opposed, citing a likelihood of confusion with its earlier ATOMIC registrations in Austria. The Opposition Division dismissed the opposition on the ground that there was no supporting documentation to suggest that Atomic Austria's marks, which were registered between 1973 and 1984, were still on the register, even though OHIM did not explicitly ask for this information to be provided and the opposition was accompanied by a certification by Atomic Austria's representative that the marks were still in force. The Second Board of Appeal agreed, but the CFI has now set this decision aside. The CFI observed:

"37 The examination of the facts and evidence submitted to OHIM must be conducted in such a way as to respect the right to a fair hearing of the parties to the opposition proceedings and the right to procedural equity. If an applicant ... doubts the probative value of documents submitted by the opponent to prove the existence of a claimed earlier right, or even the extent of that right, he may say so in the proceedings before OHIM, which is required to consider the relevant observations carefully.

38 However, OHIM cannot avoid conducting a comprehensive assessment of the facts and documents presented to it by arguing that it is for the opponent, on his own initiative, to provide OHIM with supporting evidence in the form of detailed information on the law of the Member State in which there is protection for the earlier mark on which the opposition is based.

39 Furthermore, ... neither Regulation 40/94 nor Regulation 2868/95 specifies a compulsory form of evidence to be lodged by the opponent to prove the existence of his earlier right. ...

40 It follows from this that .. an opponent is free to choose the evidence he considers useful to submit to OHIM in support of his opposition and ... OHIM is obliged to examine all the evidence submitted to it in order to determine whether it does prove that the earlier mark was registered or filed, and cannot reject out of hand a particular type of evidence on the basis of the form it takes".

The IPKat has received a very excited email that contains this link to what is reported as being the first Community design decision from Alicante's Community Design Court. Not being a Spanish-speaker, the IPKat is a little unclear. He thinks this court may be designated by the Spanish government as the national court for dealing with Community design cases but, to his embarrassment, he has not been able to find anything on the OHIM website that looks like a list of national Community design courts. Can some nice person out there please help?

STOP PRESS: Malte Hartmann writes:

"Referring to the article in Alicante´s newspaper Diario, I´m sorry I have to say that it is not a decision of the Spanish "Community Design Court". Nonetheless it is quiet interesting as the article states that it is the first decision of the Spanish "Community Trade Mark Court" in Alicante (took quiet a long time...).

An Italian producer of suitcases asked for interim relief to stop the sale of similar suitcases produced by a Spanish company, located in Aspe. It doe not say which kind of mark was involved. The first instance court dismissed the injunction, the CTM Court of Second Instance granted it. Furthermore the court ordered a detention of the infringing suitcases until the end of the procedures. Also it seems as if the defendant had to pay 3,000 EURO as compensation for damages (which seems peculiar to me as it is a provisional ruling, I don´t know if the article is clear in that point). The newspaper considered it notable that the court illustrated his judgment with photos of the products".

Darren Smyth (Marks & Clerk) adds:

"... I have enlisted the help of my colleague Hernan Rios, who is from Chile.

The handbag: a powerful motif in British politics

The title reads "The Court withdraws two lines of handbags from Aspe on its first decision on trade marks". They mean designs, obviously. The article states that this is the first decision of El Tribunal de Marcas de la Audiencia Provincial concerning the Community Trade Mark. Again, they clearly mean Community design. However, it is not clear whether the matter relates to registered or unregistered community design rights. I suspect unregistered, because the report talks about copying.

Aspe is apparently a village in the province of Alicante.

Aspe: handbag conflict capital of Spain

According to Hernan Rios, the article states that:

* the matter started in September 2004, when an Italian company filed an action before the Juzgado en Lo Mercantil (apparently a new court appointed very recently) requesting the withdrawal of two lines of handbags being commercialised by a Spanish company on the internet. The judge refused to take any precautionary measures, stating that there were no reports that proved that there has actually been a copy of the designs.

* the claimant appealed this decision to the Tribunal de Marcas de la Audiencia. This tribunal issued an interim decision stating that:

"The grade of coincidence even to the smallest details is such, that it cannot be stated that the handbags are the result of an independent work carried out by the defendant, and no one can reasonably think that the defendant was not aware of the handbags of the claimant".

The article adds that, according to the judges, the defendant's bags are but a mere 'copia servil' (slavish copy) in view of the countless coincidences in the appearance of the handbags.

The tribunal has ordered the precautionary withdrawal of two lines of handbags being commercialised by the Spanish company. In order for the proceedings to continue, the claimant must deposit with the Court a bond ('fianza') for the sum of 3000 Euros within seven days.

It is indicated that the purpose of this deposit is to cover any possible damages that may be caused to the defendant originating from the withdrawal of the goods. The deposit was fixed at 3,000 Euros because the defendant declared that if the goods were to be withdrawn, this would cause them a small economic damage ('escasos perjuicios económicos').

It states that the judges used pictures to reach their decision. The journalist states that this is the first time where pictures have been used to justify or ground a judicial decision.

The journalist continues by stating that the Tribunal de Marcas provisionally ordered the defendants to stop selling the two lines of handbags. The goods are to be sealed, inventoried and retained in the warehouses of the defendant until the lawsuit is decided. In other words, the goods are to be seized.

The ruling (auto) states that it wants to avoid during the pending of the trial the high risk of confusion among the consumers and the professionals involved in this sector ('profesionales del sector'). I think he means people involved in the business of selling handbags.

Hernan's sources in Alicante indicate that,extraordinarily, the decision was reported in the newspaper before being communicated to the parties".

So, friends and readers, you can draw your own conclusions. Thanks, Malte and Darren, for your efforts and assistance (and thanks to Hernan too).

Tuesday, 19 April 2005

Outlaw draws attention to an article in the Independent which reports that Baroness Thatcher is bringing copyright proceedings against the BBC in the High Court. Baroness Thatcher alleges that the BBC infringed her copyright in her televised memoirs “Mrs Thatcher – the Downing Street Years” by broadcasting a trailer containing a clip of her describing the conspiracy that led to her downfall as "treachery with a smile on its face". The BBC admits the infringement, but the parties have not been able to agree on suitable damages. Hugh Scully, chairman of Fine Art production company, which shares the copyright with Thatcher, has said:

“A licence for the use of our archive in this way was always completely out of the question. Perhaps that is why we were never asked."

You can bet she won’t be handbagged…

The IPKat notes that this reopens the thorny issue of what damages are appropriate when the IPR owner would not have granted a licence. It is often viewed as unsatisfactory to grant a notional licence fee when such a licence could never have come into existence.

The humour may not be hugely side-splitting, but the point is well made. Corporations presume a great deal when they lay claim to their consumers' love of their products -- especially when these presumptuous statements are targeted for exclusivity via trade mark registration. and when it comes to McDonald's, who is actually loving whom? Merpel asks: I've just found this website. Can anyone persuade me it's for real?

IPKat co-owner Jeremy has lost his copy of Managing Intellectual Property for May 2004. This is an inconvenience, since he'd like to send his MIPs for 2004 for binding. It's also a little frustrating, since Euromoney gave thousands of free copies away during last year's INTA Meeting. Please, if anyone out there has a spare or unwanted May 2004 MIP, even if it's a little dog-eared, the IPKat will give it a good home. Just let Jeremy know here.

The Accra Mail (Ghana) reports that Saturday 23 April 2005 is World Book and Copyright Day. Designated by UNESCO as an annual worldwide celebration, the event is meant to encourage and assist young people to discover the pleasure of reading books and the need to protect copyright and general knowledge of the literary industry. The programme, which would be held under the theme "Knowledge is Power" will also include a football Gala, which will involve six second cycle schools competing for a giant trophy. A special quiz competition with attractive prizes will also be organised. This event is targeted at basic and second cycle schools and is aimed at strengthening their interest and skills in obtaining information from books, the Internet and related media. Prizes set aside for participants in the quiz competition include free membership of the French Information Centre in Accra, internet access and scholarships for French language courses.

Citizens of Accra take to their boats in an attemptto flee "World Book and Copyright Day"

In competition with UNESCO, the WIPO website says that Tuesday 26 April is WIPO's World Intellectual Property Day. A list of "suggested activities" is furnished for those who might otherwise just be sitting at home, reading the French Information they won from the French Information Centre in Accra ...

In case you missed it, 7 April was the World Health Organization's World Health Day. Presumably this was not a call to the nations of the world to firebomb the proprietary pharmaceutical companies and liberate medicines for mass production by the Indian generics industry. Nor did the WHO call for a renewal of the boycott of IP-rich Nestle for pushing its milk formula brands into societies that don't yet have access to clean water for preparing their products (click here for comments by Nestle, Baby Milk Action and then Nestle again).

Is the IPKat alone in thinking that the idea of copyright days and IP days is a little pathetic? Particularly if, for most people, one IP day a year leaves 364 days for making unauthorised copies, P2P file-sharing, plagiarising essays and school assignments and so on. Comments, please.

The Court of First Instance (CFI) ruled today in Joined Cases T-380/02 and T-128/03,Success-Marketing Unternehmensberatungsgesellschaft mbH v OHIM, another miserable restitutio in integrum case. In short, the applicant sought to register the word mark PAN & CO as a Community trade mark in various classes, including Class 30 (bread, flour preparations etc). It filled in the application form, including details of his representative's fax number. Chipita opposed, citing its earlier PAN figurative mark (below) and alleging a likelihood of confusion in respect of goods in Class 30.

The opposition succeeded for class 30, but the application was allowed for the other classes and the applicant was asked to pay the registration fee. Subsequently OHIM sent the applicant a copy of the Opposition Division's decision. The applicant complained that it had not been informed of the opposition proceedings, asked for its money back and also asked for the clock to be turned back a year, to before the opposition proceedings were commenced. The Board of Appeal rejected this application and the CFI agreed. Apart from the question of whether it had been brought outside the time limit for making such application, it was bound to fail once OHIM showed that notice of the Opposition Division proceedings was faxed to it and that the fax transmission appeared to be successful.

The IPKat wishes the application could have been refused on the grounds that it was dull, technical and boring.

The IPKat has found a bit of an oldie. Last week the Japan Times reported that Japan has established a specialist IP High Court. The court, which will hear appeals from the Tokyo and Osaka district courts, is composed of 18 judges who will eventually be aided by more than 100 technology-savy assistants. It is expected to hear about 700 cases a year. While an appeal from the IP Court to the Supereme Court is theoretically possible, in practice the Superem Court only hears cases of special importance.

The wrong sort of Japanese court…

The IPKat thinks this sounds like a slick operation. He hopes for the sake of litigants that the new court will be speedy and efficient.

Monday, 18 April 2005

BBC News reports that UK High Street fashion chain Monsoon is suing its competitor Primark for copying its clothes. Monsoon said Primark was willing to remove six items, including skirts, swimwear, girl's trousers, and children's socks and scarves, off shelves in its stores. Monsoon, however, said it had issued High Court proceedings, claiming the alleged copying was "unacceptable". It is seeking damages and a commitment that Primark would not copy again. The clothes under dispute are a zigzag linen skirt, a curved panelled skirt, tropical floral print swimwear, girls' corduroy trousers, a children's striped scarf and poodle and heart socks.

Primark reportedly paid Monsoon £23,000 last May after admitting that it had copied the firm's Brittany top for girls and a butterfly dress.

The IPKat is still wondering what a butterfly dress is. He has only ever seen butterflies in the nude ...

Ananova somewhat depressingly reports that aircraft mechanic Michael Harriman, a German inventor from Nuremberg, claims to have created the world's most sophisticated robot sex doll. His sex androids have 'hearts' that beat harder during "sex"; they also breathe harder and have internal heaters to raise the body temperature - but their feet stay cold "just like in real life", Harriman says:

"They are almost impossible to distinguish from the real thing, but I am still developing improvements and I will only be happy when what I have is better than the real thing".

Harriman's dolls reportedly sell under the Andy brand name for £4,000 each for the basic model, with extra charges for adaptations like extra large breasts. The model can also be made to move by remote control, wiggling her hips under the bedclothes and making other suggestive movements - all at the touch of a button. Harriman said his design was an improvement on the popular 'real dolls' sold in the USA.

Part of the prior art against which Herr Harriman's inventionis to be considered for the purpose of patentability

The IPKat has long admired the complex system of intellectual property rights that inspires inventors to create things that really benefit mankind. But when he reads about this sort of thing, he wonders if he hasn't been somewhat misguided...

Good news, chaps – the Community Patent is not dead. The IPKat knows this after reading a press release from the EU website detailing a recent visit by European Parliamentarians to the EPO. According to the press release:

In recognition of the important role patents play in economic growth and development, the Commission is working on a Community Patent in order to save entrepreneurs the cost, effort and potential confusion of being granted protection under different national patent regimes.

Other useful gems are the fact that the EPO employs 6,000 people and that the EU press corps seem to be using the term iPod generically.

The IPKat says don’t hold your breath for the Community patent coming any time soon.

Sunday, 17 April 2005

The IPKat received a sweet little book in his post this weekend -- Indian IP Laws, prepared by Indian patent and trade mark attorneys Chandrakant M. Joshi, Mumbai and distributed with that firm's compliments. This book carries full colour photos of life in the firm's office, plus a helpful map that shows India and her geographical relationship to her closest neighbours. Then comes the statute law on patents, trade marks and designs. Alas, the text of the Copyright Act is missing, even though the cover design features an attractive little copyright sign among the other IP symbols.

The Chandrakant M. Joshi logo

The IPKat notes that this little book also quotes extensively from the unknown poet who wrote The Value of Time (click here for full version: CM Joshi only use the bit that runs from "To realize the value of ONE YEAR ..." to "Silver Medal in the Olympics"). He's delighted to see such cultural pretensions bursting forth in this particular sector of the legal profession. Merpel is more cynical: "of course they value time -- they probably bill their clients by the hour".

The IPKat has been perusing the pages of the April 2005 issue of Euromoney's ten-times-a-year publication Managing Intellectual Property, which has a special 25 page focus on the Benelux countries (or at any rate on Belgium and the Netherlands; poor old Luxembourg wasn't much in evidence). Key features in this issue include:

* more news and comment on the great European soap opera that is the Computer Implemented Inventions Directive;

* an article by Gabriela Nunez on the Andean Pact countries' rules as they affect pharmaceutical patents;

OHIM have issued a new practice notice concerning the Community design. The notice concerns what constitutes an acceptable graphical representation for the purposes of Art.4 of the Community design directive. The main clarification provided by the notice is that the design applied for must be shown on a “neutral background”. A background will be considered to be neutral if the design is clearly discernable against it. The example of a garden or buildings depicted in the background is given – this is fine, as long as it does not impede the view of the design. The notice goes on to describe the procedure undertaken by the Office if an applicant initially provides an insufficient graphical representation with his application.

Not an acceptable graphical representation for CD purposes

The IPKat loves the pictures in the notice, but then, pictures in practice directives are always fun. Merpel says, IPKat, get a life.

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